Ex Parte Simmons et al

Patent Trial and Appeal Board

Feb 3, 2017

11242624 (P.T.A.B. Feb. 3, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/242,624 10/03/2005 Edward D. Simmons 018796.00003 4568
26712 7590
HODGSON RUSS LLP
THE GUARANTY BUILDING
140 PEARL STREET
SUITE 100
BUFFALO, NY 14202-4040
EXAMINER
HAMMOND, ELLEN CHRISTINA
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
02/07/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocketing @ hodgsonrus s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD D. SIMMONS
and YINGGANG ZHENG
Appeal 2015-004680
Application 11/242,624
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
GEORGE R. HOSKINS, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 and 3-12. Appeal Br. 2. Claim 2 was cancelled and claims 13-17
were withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-004680
Application 11/242,624
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below.
1. An orthopaedic device comprising:
a) an orthopaedic bone screw; and
b) a sleeve of polyetheretherketone material, the sleeve having
an open end in which said screw is received, an opposed closed end,
and a longitudinal axis between the open end and the closed end,
wherein the screw sleeve has a generally circular cross-section at any
point along the longitudinal axis, and wherein the sleeve increases
interference between said screw and bone tissue when said device is
installed in bone.
REJECTION
Claims 1 and 3-12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over DiPoto (US 5,957,953, iss. Sept. 28, 1999) and Bonutti
(US 2003/0130744 Al, pub. July 10, 2003), as evidenced by Kampner
(US 5,571,193, iss. Nov. 5, 1996) and Schlienger (US 2012/0203226 Al,
pub. Aug. 9, 2012).
ANALYSIS
The Examiner found that DiPoto teaches an orthopaedic bone screw
(inner member 204) and sleeve (outer member 202) as recited in claim 1, but
the sleeve is not made from a polyetheretherketone (PEEK) material. Final
Act. 2-3 (citing 4:23-24, Figure 9A). The Examiner found that Bonutti
teaches a screw made of PEEK, and a PEEK coating for a screw, to lock the
screw into bone as the PEEK imbibes water. Id. at 3. The Examiner also
determined it would have been obvious to make DiPoto’s sleeve of PEEK in
view of Bonutti’s teaching that PEEK was known to have beneficial effects
of imbibing water to lock screws into bone, and a skilled artisan selects a
known material for its suitability for an intended use as a design choice. Id.
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Appeal 2015-004680
Application 11/242,624
The sole issue for our consideration is whether a skilled artisan would
have been motivated to make DiPoto’s sleeve (outer member 202) out of a
PEEK material. As set forth below, we find that the Examiner’s reason for
making DiPoto’s sleeve of PEEK is supported by a rational underpinning.
DiPoto teaches an expandable suture anchor that can be inserted and
secured in softer or harder bone tissue through cooperative engagement of an
inner member 204 and outer member 202 to expand outer member 202 and
thereby obtain a secure fixation for the quality of the bone. DiPoto, 1:5-25,
1:34-2:4. This configuration allows continuous adjustment of the amount of
expansion of the outer member in the bone tissue. Id. at 2:1-4. Figures 9-
9B of DiPoto are reproduced below to illustrate this arrangement.
FIG. 9B /•
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Appeal 2015-004680
Application 11/242,624
Figures 9 and 9A show adjustable suture anchor 200 before inner
member 204 is threaded into outer member 202. Figure 9B shows anchor
200 with inner member 204 partially threaded into outer member 202 but
before conical head 208 engages arms 216 and urges arms 216 to expand
radially outwardly and anchor in bone tissue. Id. at 9:14-24, 9:62-67.
DiPoto thus teaches that outer member 202 is expanded radially by
threading inner member 204 therein to secure anchor 200 in a bone hole. Id.
at 9:62-10:12. A series of transverse ridges 228 on the exterior surface of
outer member 202 help retain suture anchor 200 through an interference fit
with the bone tissue. Id. at 9:52-60. Therefore, although expandable outer
member 202 allows a user to tailor the amount of expansion for proper
fixation for the procedure at hand and the type of bone tissue, DiPoto also
uses transversely-oriented outer ridges 228 to retain anchor 200 in a bone.
The Examiner proposes to improve DiPoto’s anchor by making outer
member 202, which is a sleeve, out of PEEK material, as recited in claim 1.
Final Act. 3. The Examiner proposes to do so based on express teachings of
Bonutti that PEEK materials are known to improve retention of bone screws
and anchors in bone tissue by imbibing fluid from bone tissue. Id. Thus, the
Examiner’s reasoning is supported by rational underpinning. In this regard,
Bonutti teaches a fastener 354 that secures a bone plate to a bone by being
made of PEEK or other “suitable expandable material.” Bonutti ^ 96. The
portion 356 of fastener 354 that is inserted into bone 352 is made of PEEK
to imbibe fluid from the bone and expand radially outwardly to lock fastener
354 into bone 352. Id. \ Final Act. 3. Bonutti teaches that the expandable
PEEK portion that is inserted into bone can be unthreaded 356 (Fig. 12) or
threaded 364 (Fig. 12a), or it can be a coating thereon. Bonutti 96-97.
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Appeal 2015-004680
Application 11/242,624
Appellants have not persuaded us that this modification would render
DiPoto inoperable or unsuited for use as an anchor. Appellants’ arguments
boil down to the following syllogism: the arms of DiPoto’s anchor must be
sufficiently flexible to expand radially; a PEEK material has a flexibility that
is similar to a dense, rigid bone and that is much stiffer than other plastics or
DiPoto’s materials; therefore, a PEEK material is too stiff of a material to be
used in DiPoto’s anchor and would render DiPoto inoperable and unsuitable
for its intended purpose. Appeal Br. 4-8; Reply Br. 2-5 (a stiffer material
also would change the principle of operation of DiPoto).
Appellants’ argument is not persuasive in view of Bonutti’s teaching
that PEEK is an expandable material for orthaepedic anchors and DiPoto’s
teaching that suitable materials for inner 204 and outer 202 member include
metals like titanium and stainless steel. DiPoto, 4:20-28; see Ans. 5. We
appreciate Appellants’ arguments that PEEK is less flexible than some other
plastics, but Appellants fail to address whether PEEK is less flexible than
titanium and stainless steel, which DiPoto discloses as suitable materials for
inner and outer members 204, 202. See Appeal Br. 4; Reply Br. 2.
DiPoto also teaches that the arms 216 of outer member 202 expand
radially due to slots 218 and enlarged apertures 220 that “help ensure that
arms 216 are sufficiently flexible at body 212 to expand radially.” DiPoto,
9:38^10 (emphasis added). “The enlarged apertures 220 of slots 218 both
facilitate the expansion of arms 216 and help ensure that arms 216 flex at
the locations of apertures [220] rather than more proximally.” Id. at 10:1-3
(emphasis added). Appellants have not persuaded us that PEEK would not
be sufficiently flexible to serve as a material for outer member 202, which
DiPoto teaches can be made from either titanium or stainless steel.
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Appeal 2015-004680
Application 11/242,624
Schlienger discloses the use of PEEK in slotted, expandable sleeves
like DiPoto’s outer member. Schlienger teaches sleeves 10 with slots 11 that
extend along the entire length of sleeve 10 (Fig. 4), and partial slots IE that
extend longitudinally over only a portion of the length of sleeve 10 (Fig. 5).
Schlienger 29, 39; Final Act. 4. In both cases, slots 11, IE provide sleeve
10 with “elasticity” and facilitate the radial expansion of sleeve 10 with less
torque when a conical segment of bone screw 1 is screwed into sleeve 10.
Schlienger 28-31, 39. Schlienger teaches that sleeve 10 may be made of
a non-absorbable plastic, and preferably PEEK, due to its biocompatibility,
produceability, simple installation, and compressibility. Id. 12, 32.
Schlienger also teaches that sleeve 10 may be metal or absorbable plastic.
Id. Tflj 33-34. Schlienger thus teaches the preferability of PEEK material for
expandable orthopaedic sleeves and supports the Examiner’s determination
that it would have been obvious to a person of ordinary skill in the art to
make DiPoto’s outer member 202 of PEEK to improve its biocompatibility,
expandability, and ability to lock into bone. See Final Act. 3-4; Ans. 6.
Accordingly, we sustain the rejection of claim 1. As Appellants do
not present separate arguments for claims 3-12, we sustain the rejection of
those claims as well. Appeal Br. 4, 8 (claims 3-12 are allowable because
they depend from claim 1); see 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the rejection of claims 1 and 3-12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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